DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Examiner acknowledges Applicant’s response filed 28 January 2026 containing remarks and amendments to the claims.
The previous rejections have been updated as necessitated by amendments to the claims. The updated rejections follow.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-14, 17, and 19-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Palmer (US 2017/0137717).
Regarding claims 1 and 23, Palmer teaches feeding a used lubricating oil as feedstock to dehydration and fuel stripping units to produce a dewatered and defueled feedstock, and sending the dewatered defueled feedstock to a VDC to produce lighter base oil fractions and VTAE (see figures 6-7, [0070-072], [0060-0062]). Palmer feeds VTAE to a solvent deasphalting unit with hydrocarbon solvent in order to recover a product having reduced solids (polymer) and metals concentrations [0122].
Regarding claim 2, Palmer teaches using the purified VTAE material in various asphalt applications [0122].
Regarding claims 3-6, Palmer teaches oxidizing the VTAE in combination of asphalt or bitumen to form oxidized product having improved performance characteristic [0073], blending the VTAE with asphalts and air blowing in order to create products suitable for paving [0073-0078].
Regarding claims 7-9, Palmer teaches blending 20% purified VTAE with 80% asphalt [0123], also [0038].
Regarding claim 10, Palmer teaches blending a base asphalt with purified vtae having 1-30% vtae [0038].
Regarding claim 11, Palmer teaches separating the vacuum distillates from the vdc to hydrotreatment and fractionation to recover base oil distillates (see figure 7, [0061], [0139], [0037], [0125]).
Regarding claim 12, Palmer teaches separating and recycle of solvent [0122].
Regarding claims 13-14, Palmer teaches oxidizing to produce asphalt products [0123], [0073] and blending to produce pavement materials [0073-0080].
Regarding claims 17 and 19, Palmer teaches using petroleum derived solvents including pentane and n-heptane [0122].
Regarding claim 20, Palmer teaches CAPR comprising metals including aluminum, barium, etc [0030].
Regarding claims 21-22, Palmer teaches the same process steps applied to claim 20, as discussed above. Therefore, it is expected that the same products would result. Further, Palmer teaches blends of 1-98% asphalt with 1-30% VTAE with 1-30% SBS [0038]. Palmer further teaches poly alkyl methacrylates and styrene polymers [0038-0039]. Palmer teaches the materials also comprise metal compounds [0084].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 15-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Palmer (US 2017/0137717) in view of Waghorne (US 2,729,589).
Regarding claims 15-16 and 18, Palmer teaches the limitations of claim 1, as discussed above.
Palmer does not explicitly disclose the solvent ratio, or using propane solvent.
However, Waghorne teaches a conventional solvent deasphalting unit using propane solvent and ratios of about 4-10 (column 2, lines 1-60).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate solvents, including propane, and optimized the solvent ratio, for the benefit of achieving the desired separations. Examiner considers Waghorne solvent ratio of about 10 to be close enough to the claimed range of 12:1, that the same or similar results would be achieved. Alternatively, it would have been obvious to the person having ordinary skill in the art to have optimized the solvent ratio depending on the solvent used and the feedstock, in order to achieve the desired separation.
Response to Arguments
Applicant's arguments filed 28 January 2026 have been fully considered but they are not persuasive.
Examiner considers Applicant’s arguments to be:
Palmer does not teach sending VTAE to solvent deasphalting stages.
Palmer does not teach solvent ratios of 12:1 or oxidation and pelletization.
Regarding Applicant’s first argument, Palmer teaches sending VTAE to solvent extraction with pentane, heptane, or other solvents to recover asphalt fraction precipitated from the hydrocarbons [0072].
Regarding Applicant’s second argument, Examiner notes that the independent claim does not require a solvent ratio or oxidation or pelletization. The rejections for claims 15-16 rely on teaching from Waghorne to address the solvent ratios. Waghorne is analogous art as it is a solvent deasphalting process, using alkane solvents to separate asphalts from hydrocarbons. Palmer teaches oxidation of the purified vtae [0073] as discussed with respect to claim 3.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE STEIN whose telephone number is (571)270-1680. The examiner can normally be reached Monday-Friday 8:30 AM-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHELLE STEIN/ Primary Examiner, Art Unit 1771